UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before The Honorable Theodore R. Essex
`Administrative Law Judge
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`In the Matter of
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`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
`
`Investigation No. 337-TA-750
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`COMPLAINANT APPLE INC.’S MOTION IN LIMINE NO. 1 TO EXCLUDE
`PORTIONS OF THE DIRECT WITNESS STATEMENTS OF DR. C. DOUGLASS
`LOCKE (RX-1874C) AND DR. ANDREW WOLFE (RX-1885C)
`OFFERING TESTIMONY OUTSIDE THE SCOPE OF EXPERT REPORTS
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`Pursuant to Commission Rule 210.15, Complainant Apple Inc. (“Apple”) hereby
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`respectfully moves in limine to preclude Respondent Motorola Mobility (“Motorola”) from
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`offering certain testimony in the witness statements of Dr. C. Douglas Locke (RX-1874C) and
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`Dr. Andrew Wolfe (RX-1885C). Drs. Locke and Wolfe are offered as experts in this
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`Investigation, and pursuant to Ground Rule 10.5.6, their testimony must be limited to the scope
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`of their expert reports, deposition testimony, or within the discretion of the Administrative Law
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`Judge. In disregard for this Ground Rule, however, Motorola has offered voluminous testimony
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`in Drs. Locke’s and Wolfe’s direct witness statements outside the scope of their expert reports
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`and deposition testimony. Introducing these new opinions without prior disclosure in an expert
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`report would greatly prejudice Apple. Accordingly, the Administrative Law Judge should
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`exclude the portions of Drs. Locke’s and Wolfe’s direct witness statements where they offer
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`these opinions, and preclude Motorola from presenting arguments in support of these theories.
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`Pursuant to Ground Rule 3.2, Apple certifies that it has made reasonable, good-faith
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`efforts to contact and resolve the matter presented in this motion with counsel for Motorola and
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`the OUiI Staff Attorney at least two business days prior to filing this motion. Motorola indicated
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`that it will oppose this motion. The OUII Staff indicated that it will state its position after
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`reviewing the motion.
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` (cid:9)
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`Dated: September 6, 20El
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`Respectfully submitted,
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`mg:
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`Mark G. Davis
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`
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`Brian E. Ferguson
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`
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`Robert T. Vlasis
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`
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`Edward S. Jou
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`Christopher T. Marando
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`Weil, Gotshal & Manges LLP
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`
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`1300 Eye Street, N.W., Suite 900
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`
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`Washington, DC. 20005
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`
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`Tel.: (202) 682-7000
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`
`
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`Anne M. Cappella
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`
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`Jill J . Ho
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`
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`Jacqueline T. Harlow
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`
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`Erin C. Jones
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`
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`Brian C. Chang
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`Weil, Gotshal & Manges LLP
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`20} Redwood Shores Parkway
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`Redwood Shores, CA 94065
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`
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`Tel: (650) 802-3000
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`
`
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`Matthew D. Powers
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`
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`Steven S. Cherensky
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`
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`Paul T. Ehrlich
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`
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`Stefani C. Smith
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`
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`Robert L. Gerrity
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`Tensegrity Law Group LLP
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`
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`201 Redwood Shores Parkway, Suite 401
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`Redwood Shores, CA 94065
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`Tel: (650) 802-6000
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`Attorneysfor Complainant Apple Inc.
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`
`
`Before The Honorable Theodore R. Essex
`Administrative Law Judge
`
`
`
`
`
`
`
`
`In the Matter of
`
`CERTAIN MOBILE DEVICES AND
`RELATED SOFTWARE
`
`Investigation No. 337-TA-750
`
`
`
`MEMORANDUM IN SUPPORT OF COMPLAINANT APPLE INC.’S MOTION IN
`LIMINE NO. 1 TO EXCLUDE PORTIONS OF THE DIRECT WITNESS STATEMENTS
`OF DR. C. DOUGLASS LOCKE (RX-1874C) AND DR. ANDREW WOLFE (RX-1885C)
`OFFERING TESTIMONY OUTSIDE THE SCOPE OF EXPERT REPORTS
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`Complainant Apple Inc. (“Apple”) respectfully submits this Memorandum in Support of
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`its Motion In Limine to Exclude Portions of the Direct Witness Statements of Dr. C. Douglass
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`Locke (RX-1874C) and Dr. Andrew Wolfe (RX-1885C) Offering Testimony Outside the Scope
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`of Expert Reports. This testimony is in clear violation of Ground Rule 10.5.6, which limits the
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`scope of an expert’s testimony to his expert reports, deposition testimony, or within the
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`discretion of the Administrative Law Judge.
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`I.
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`FACTUAL BACKGROUND
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`Drs. Locke and Wolfe each submitted initial expert reports on July 15, 2011, in
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`accordance with the amended procedural schedule set forth in Order No. 8. They each submitted
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`rebuttal expert reports on July 27, 2011. Dr. Locke also submitted a supplemental expert report
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`on July 27, 2011, and Dr. Wolfe submitted a supplemental expert report on August 8, 2011.1 Dr.
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`Locke was deposed on August 8, 2011, and Dr. Wolfe was deposed on August 10, 2011. On
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`August 22, 2011, Drs. Locke and Wolfe each submitted direct witness statements.
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`1 Dr. Wolfe’s August 8 supplemental report is the subject of a pending motion to strike
`(Mot. No. 750-018) and a separate motion in limine.
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`II.
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`ARGUMENT
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`The Locke and Wolfe witness statements each contain voluminous testimony that was not
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`disclosed in their expert reports or depositions. This is apparent from the text of many of the
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`questions in the witness statements, which explicitly ask Drs. Locke and Wolfe for new opinions
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`in response to the rebuttal opinions of Apple’s experts. These new opinions are in clear violation
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`of Ground Rule 10.5.6. Motorola has couched these opinions in terms of rebuttal testimony, but
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`Motorola should not be allowed to introduce new arguments through the guise of rebuttal expert
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`testimony when those opinions were not disclosed in an expert report. It is relatively easy to
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`identify the new opinions in Drs. Locke’s and Wolfe’s direct witness statements because their
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`prior opinions are set forth in the appendices attached to their witness statements, which consist
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`of large tables copied directly from their expert reports. Apple has objected to the incorporation
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`of these appendices as part of the record and will be addressing this issue in its high priority
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`objections,2 but regardless of their admissibility as substantive evidence, these appendices define
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`the outer bounds of Motorola’s experts’ opinions, and any additional substantive testimony
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`beyond the charts is outside the scope of Motorola’s expert reports. Large portions of Drs.
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`Locke’s and Wolfe’s direct witness statements go beyond what was disclosed in their expert
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`reports, and the volume of this testimony suggests that Motorola prepared these witness
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`statements with no regard for Ground Rule 10.5.6. The Administrative Law Judge should
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`therefore exclude the portions of Dr. Locke’s and Dr. Wolfe’s witness statements that offer
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`opinions outside the scope of their expert reports or depositions.
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`2 The incorporation of these appendices into Motorola’s witness statements is (1) not in
`Q&A format, (2) is an expert report and is not substantive evidence under Ground Rule 9.5.1, (3)
`is hearsay, (4) is a narrative, and is so voluminous that it makes live cross examination unduly
`burdensome.
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`2
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`A.
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`Dr. Locke’s Testimony Outside the Scope of His Expert Reports
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`Dr. Locke’s answers to the following questions in his witness statement are outside the
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`scope of his expert reports and his deposition: Q. 11, 14, 17, 18, 25, 27, 28, 32, 33, 35, 36, 37,
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`57, 69, 79, 99, 101-103, 118, 127-129, 138, 141, 143, 145-155, 171, 175, 179, 190-192, 194-196,
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`198, 199, 211-215, 219, 232, 233, 239, 240, 243, 244, 262, 281, 290, 293, 299, 302, 305, 308,
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`311, 321, 325, 328, 331, 334, 337, 351, 354, 360, 371, 386. Moreover, Dr. Locke’s
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`demonstratives RDX-6, 9, 13, 14, 16, 17, and 18 contain opinions that are outside the scope of
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`his expert reports and his deposition. While all of these answers and demonstratives contain new
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`opinions, Apple discusses some illustrative and particularly egregious examples below.
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`Dr. Locke submitted his initial expert report on the claim construction and validity of the
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`‘430 patent on July 15, 2011, and he submitted a supplemental report on validity on July 27,
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`2011. In those reports, Dr. Locke submitted charts that detail the full scope of his invalidity
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`theories on anticipation and obviousness for 13 references. Dr. Locke’s witness statement seeks
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`to expand his opinions for each of his references in the guise of providing rebuttal to Dr.
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`Balakrishnan’s expert reports. Dr. Locke’s entire approach to his testimony is improper and
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`starkly highlights what is “new”—instead of proceeding through his opinions on each prior art
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`reference in a proper question and answer format, Dr. Locke simply attempts to incorporate each
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`of his charts as if they were parts of his testimony for the hearing. For example, in response to
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`Question 182, Dr. Locke states that “I adopt RX-0885C in full as part of my testimony.” RX-
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`1874C [Locke Witness Stmt.] at 90. RX-0885C is a table of arguments and citations to
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`documents that spans nearly 200 pages. Dr. Locke’s approach of attempting to incorporate it in
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`full is plainly inappropriate, as Apple will detail further in its high-priority objections, and Dr.
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`Locke attempts the same tactic with every one of his 12 claim charts. Whether or not Dr.
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`3
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`Locke’s charts are admitted, the fact remains that these charts are the outer bounds for all of his
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`opinions on each reference—by definition all substantive testimony beyond the charts is outside
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`the scope of his report.
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`For example, Dr. Locke includes new matter in his answer to Question 150, concerning
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`whether UNIX find meets element (c) of claim 1 of the ‘430 patent. In his answer, Dr. Locke
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`points to two different UNIX commands as potentially meeting this element: the –print and –
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`exec commands. RX-1874C [Locke Witness Stmt.] at 81. Previously in his Appendix 6
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`discussing UNIX, which is RX-887, Dr. Locke pointed only at –print, and had no opinion on –
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`exec for that element. RX-887 [Corrected Locke Report Appendix 6]. Similarly, Dr. Locke
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`attempts to add a new theory that the –print command meets element (d), in his answer to
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`Questions 153 and 155. That theory also was not disclosed in his charts. These were substantial
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`deficiencies in Dr. Locke’s theory of anticipation, given that he had no opinion that any single
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`command (either –print or –exec) met all the limitations.
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`As another example, Dr. Locke attempts to expand his opinions on the ToolTalk
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`reference in response to Questions 293, 299, 302, 305, 308, and 311. In response to Question
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`302, Dr. Locke expressly attempts to add “additional details” beyond his report, citing and
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`relying on sections of the ToolTalk reference that were not cited or discussed in his report. In
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`Question 302, Dr. Locke is addressing element (a), and in his report he relied on only two pages
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`of ToolTalk Programmer’s Guide for this element (and the same pages for every element). RX-
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`889 [Corrected Locke Report Appendix 8]. In Question 302, Dr. Locke recognizes this
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`deficiency and attempts to expand his opinion. RX-1874C [Locke Witness Stmt.] at 118-119.
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`Similarly, Dr. Locke adds wholly new arguments, likening ToolTalk to the accused Motorola
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`products, in a vain attempt to shield those products from infringement liability, or to improve his
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`4
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`invalidity opinions. RX-1874C [Locke Witness Stmt.] at 119-120 (“This is the same way of
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`performing a query as Apple describes in their infringement contention regarding the
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`startActivity method in the accused Motorola products”); Id. at 121 (“A person of ordinary skill
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`in the art would understand that these processes in ToolTalk and Android are similar”).
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`Dr. Locke also purports to rely on new evidence, and his testimony based on that
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`evidence should be excluded. Dr. Locke listed the materials he considered in Appendix 3 to his
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`report. RX-884 [Corrected Locke Report Corrected Appendix 3]. It does not include any
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`conversations with, or declarations or testimony from Steven Isaac or Robert Ellett. But in his
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`witness statement Dr. Locke now expressly attempts to rely on these new witnesses despite the
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`fact that they were available to him at the time of his report and he failed to rely on them to
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`support any of his opinions. In his answer to Question 179, Dr. Locke states that he is now
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`relying on Robert Ellett and Steven Isaac, both of whom are Motorola-paid consultants, for
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`knowledge of the prior art status of various exhibits. Apple has moved in limine to exclude the
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`testimony of these witnesses, who have not been deposed. In any event, even if they were
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`allowed to testify, it would be improper for Dr. Locke to bolster his opinions with evidence that
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`he should have included (and been deposed on) as part of his expert reports.
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`While these are significant examples, the remainder of Dr. Locke’s testimony follows the
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`same pattern. To be clear, Apple does not object to what would be proper rebuttal in an opening
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`witness statement—Dr. Locke could have responded to Apple’s experts’ opinions within the
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`confines of his existing opinions and support for those opinions. However, Dr. Locke cannot use
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`“rebuttal” as an opportunity for wholly new opinions that find no support in expert reports, in
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`violation of the Ground Rules. Dr. Locke’s new testimony and demonstratives should be
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`excluded.
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`5
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`B.
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`Dr. Wolfe’s Testimony Outside the Scope of His Expert Reports
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`Dr. Wolfe’s answers to the following questions in his witness statement are outside the
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`scope of his expert reports and his deposition: Q. 23, 35, 56-62, 64-70, 137-139, 172, 173, 184,
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`185, 195, 201, 211, 212, 223, 224, 230-233, 269, 270, 277, 280-290, 291-293, 297-299, 304-306,
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`307-320, 321/322,3 324-327, 329-333, 335, 338, 340, 345-347, 352, 363, 367, 378, 379, 382,
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`383, 386, 387, 389, 399-401, 403-406, 411, 413, 435, 439, 442, 463-465, 473-475, 478-483, 486,
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`487, 490, 492, 493-499, 503-513, 517-522, 525-535, 538-541, 544-549, 564-566, 572.
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`Moreover, Dr. Wolfe’s demonstratives RDX-9-12, 16-17, 20-24, 42-43, and 45-46 contain
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`opinions that are outside the scope of his expert reports and his deposition. Apple discusses
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`some illustrative and particularly egregious examples below.
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`Dr. Wolfe submitted his initial expert report on the claim construction and validity of the
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`’607 and ’828 patents on July 15, 2011, and he submitted a supplemental report on validity on
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`August 8, 2011. In those reports, Dr. Wolfe submitted charts that detail the full scope of his
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`invalidity theories on anticipation and obviousness. Dr. Wolfe’s witness statement seeks to
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`expand his opinions for each of his references in the guise of providing rebuttal to Dr.
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`Subramanian’s and Dr. Balakrishnan’s expert reports. Like Dr. Locke, Dr. Wolfe attempts to
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`incorporate his claim charts as if they were parts of his testimony for the hearing. See, e.g. RX-
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`1885C [Wolfe Witness Stmt.] at 106-107 (“I adopt these Appendices in their entirety as part of
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`my testimony.”). Whether these charts are admissible or not, they starkly highlight what
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`opinions are new and beyond the scope of the charts that were submitted with his expert report.
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`3 Question 321 in the Direct Witness Statement of Andrew Wolfe is followed by a
`paragraph numbered 322 that appears to be Dr. Wolfe’s answer to Question 321. “321/322” is
`intended to refer to this question and answer pair.
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`6
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`

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`For example, questions 269-270, 277, 288, 304-320 eliciting new and unsupported
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`opinions about the Perski and Morag references that do not appear in the appendices to Dr.
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`Wolfe’s witness statement and were not presented in his expert reports. RX-1885C [Wolfe
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`Witness Stmt.] at 102-106, 117-126. Questions 321 and 324-326 elicit new and unsupported
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`opinions about the Smartskin reference by, for example, citing to portions of the deposition
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`testimony of Joshua Strickon that were not identified in his expert reports. Id. at 126-130.
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`Questions 327, 329-331, and 352 elicit new opinions about the Mulligan reference in the guise of
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`rebuttal testimony. Id. at 130-132, 151-152. Questions 492-498 elicit new opinions about the
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`Desai Thesis that were not disclosed in Dr. Wolfe’s expert reports, including citations to Chapter
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`5 that do not appear anywhere in the corresponding claim charts. Id. at 248-252. In his response
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`to question 498, Dr. Wolfe refers to claim 16 of the ’828 patent, which was not referenced in his
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`expert reports, and offers this new opinion repeatedly throughout his witness statement,
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`including at question 439 and 511. Id. at 205-206, 251-252, 257-258. His response to question
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`511 cites portions of Tsukune ’989 that were not identified in any of his expert reports. Id. at
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`257-258. In his answer to question 535, Dr. Wolfe references claims 2 and 3 of the Shieh ’118
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`patent, but there was no such disclosure in his expert reports or at his deposition. Id. at 267-268.
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`Dr. Wolfe’s testimony also includes numerous other new opinions that were not disclosed
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`in his expert reports. Questions 64-70 ask for Dr. Wolfe’s opinions regarding the testimony of
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`named inventors and references not discussed in his expert reports. RX-1885C [Wolfe Witness
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`Stmt.] at 23-25. Question 195 contains new opinions regarding Dr. Wolfe’s understanding of
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`“electrically isolated.” Id. at 78. Questions 211-212 contain new opinions regarding the
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`construction of “one or more sensor integrated circuits operatively coupled to the lines,”
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`including new citations to the file history of the ’607 patent. Id. at 86-87. His answer to
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`7
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`

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`question 421 contains many new opinions regarding a portion of the specification cited by Dr.
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`Balakrishnan, which was not contained in any of Dr. Wolfe’s expert reports. Id. at 195-199. In
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`his answer to question 439, Dr. Wolfe references dependent claims 16 and 17 of the ’828 patent,
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`which were not cited anywhere in his expert reports or at his deposition. See RX-1885C at 205-
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`206. There are many more questions and answers that are outside the scope of Dr. Wolfe’s
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`expert reports and deposition testimony, and the examples cited herein merely illustrate the
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`egregious nature of Dr. Wolfe’s new opinions. All of the answers identified in this motion
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`contain new opinions that are in violation of Ground Rule 10.5.6, and the Administrative Law
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`Judge should therefore exclude this testimony and corresponding demonstratives.
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`III. CONCLUSION
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`For the foregoing reasons, Apple’s Motion In Limine No. 1 should be granted, and the
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`Administrative Law Judge should exclude the answers to questions 11, 14, 17, 18, 25, 27, 28, 32,
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`33, 35, 36, 37, 57, 69, 79, 99, 101-103, 118, 127-129, 138, 141, 143, 145-155, 171, 175, 179,
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`190-192, 194-196, 198, 199, 211-215, 219, 232, 233, 239, 240, 243, 244, 262, 281, 290, 293,
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`299, 302, 305, 308, 311, 321, 325, 328, 331, 334, 337, 351, 354, 360, 371, 386, and
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`demonstratives RDX-6, 9, 13, 14, 16, 17, and 18 in Dr. Locke’s Direct Witness Statement (RX-
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`1874C). The Administrative Law Judge should also exclude the answers to questions 23, 35, 56-
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`62, 64-70, 137-139, 172, 173, 184, 185, 195, 201, 211, 212, 223, 224, 230-233, 269, 270, 277,
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`280-290, 291-293, 297-299, 304-306, 307-320, 321/322,4 324-327, 329-333, 335, 338, 340, 345-
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`347, 352, 363, 367, 378, 379, 382, 383, 386, 387, 389, 399-401, 403-406, 411, 413, 435, 439,
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`442, 463-465, 473-475, 478-483, 486, 487, 490, 492, 493-499, 503-513, 517-522, 525-535, 538-
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`4 Question 321 in the Direct Witness Statement of Andrew Wolfe is followed by a
`paragraph numbered 322 that appears to be Dr. Wolfe’s answer to Question 321. “321/322” is
`intended to refer to this question and answer pair.
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`
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`8
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`541, 544-549, 564-566, 572, and demonstratives RDX-9-12, 16-17, 20-24, 42-43, and 45-46 in
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`Dr. Wolfe's Direct Witness Statement (RX- 1885C).
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`Dated: September 6, 2011 (cid:9)
`
`Respectfully submitted,
`
`Mark G. Davis
`Brian E. Ferguson
`Robert T. Vlasis
`Edward S. Jou
`Christopher T. Marando
`Weil, Gotshal & Manges LLP
`1300 Eye Street, N.W., Suite 900
`Washington, D.C. 20005
`Tel.: (202) 682-7000
`
`Anne M. Cappella
`Jill J. Ho
`Jacqueline T. Harlow
`Erin C. Jones
`Brian C. Chang
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3000
`
`Matthew D. Powers
`Steven S. Cherensky
`Paul T. Ehrlich
`Stefani C. Smith
`Robert L. Gerrity
`Tensegrity Law Group LLP
`201 Redwood Shores Parkway, Suite 401
`Redwood Shores, CA 94065
`Tel: (650) 802-6000
`
`Attorneys for Complainant Apple Inc.
`
`0
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`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing was served on September 6, 2011 as indicated, on
`the following:
`
`Via EDIS
`The Honorable James R. Holbein
`Secretary
`U.S. International Trade Commission
`500 E Street SW, Room 112
`Washington, D.C. 20436
`
`Via Email
`Lisa Kattan
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W., Room 401
`Washington, D.C. 20436
`lisa.kattan@usitc. gov
`
`Via Hand Delivery & Email (2 copies)
`The Honorable Theodore R. Essex
`Office of the Administrative Law Judge
`U.S. International Trade Commission
`500 E Street SW, Room 317
`Washington, D.C. 20436
`gregory.moldafsky@usitc.gov
`
`Via Email and Hand -Delivery
`Charles F. Schill
`STEPTOE & JOHNSON LLP
`1330 Connecticut Avenue, N.W.
`Washington, DC 20036
`motorola750@steptoe.com
`
`Via Email
`Charles K. Verhoeven
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`
`Via Email
`Robert T. Haslam
`Covington & Burling LLP
`333 Twin Dolphin Drive, Suite 700
`Redwood Shores, CA 94065-1418
`
`David A. Nelson
`Quinn Emanuel Urquhart & Sullivan LLP
`500 West Madison Street, Ste. 2450
`Chicago, IL 60661
`
`Edward J. DeFranco
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`
`Moto-Apple-75 0 (cid:9) quinnemanuel.com
`
`Robert D. Fram
`Covington & Burling LLP
`One Front Street
`San Francisco, CA 941110
`
`AppleCov@cov.com
`
`olleen Sr9ar
`Paralegal